A recent Court decision considered an innovation patent relating to passive fire protection and confirmed that, whilst innovative step is low bar, it is a bar that must be cleared for an innovation patent to be valid.
Australia’s 8-year innovation patent is being phased out, but existing innovation patents remain in force and new innovation patent applications can still be filed if they are linked to an Australian non-provisional (or international) patent application filed prior to 26 August 2021.
Generally speaking, an innovation patent is more likely to be valid than a similar standard (20-year) patent because less variation from older technology is required.
Standard patents require an ‘inventive step’ which means ‘non-obvious’ or more than a routine development in the technology, or a plain and logical extension of what is already publicly known.
Innovation patents require an ‘innovative step’ which is a variation that ‘makes a substantial contribution to the working of the invention’. This is a lower bar than an inventive step. Obvious variations of earlier technologies can be valid covered. An early court decision considered spring steel roadside posts and held that each of the following variations separately amounted to an innovative step:
- a marker hole (e.g. item 135) useful as a depth gauge during installation and a gripping point during removal;
- a barb (e.g. item 137) for anchoring the post into the ground;
- a tapered end (e.g. item 132) to make it easier to drive into the ground;
- lengthwise ribs to resist buckling; and
- specific dimensions.
In view of this early case law, very few claims (definitions of coverage) have been held invalid for failing to clear the low ‘innovative step’ bar. The recent court decision provides a rare example of technology that was strictly new but lacked an innovative step.
The invention of innovation patent no. 2017101778 relates to a tube that could be mounted under an overhead concrete slab to carry water pipes and electrical cables (etc) from one side of a wall to the other. The tube contains ‘intumescent’ material that swells in response to heat to close the tube to prevent a fire spreading from one side of the wall to the other.
The tube is built in two parts – a first portion 2 and the second portion 4 to make for an easier assembly sequence that includes:
- attaching the portion 2 to the ceiling;
- attached the portion 4 to the portion 2 to form the tube; then
- building the wall about the tube.
The patent includes five claims (definitions of coverage) which each related to a method of constructing a barrier (e.g. a wall). Claim 5 specifies the step of ‘marking a line on the [ceiling] so as to depict the proposed centre line of the [wall]’.
The court held that the tubes and methods were publicly known from earlier conservations except the early method entailed marking out the wall rather than specifically marking out the centre line. The option of using a laser marker to project a line was discussed and the court held that the use of a physical centre line was no more than a trivial addition that did not amount to an innovative step. Claim 5 was held invalid on this basis.